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Boosey & Hawkes Music Publrs., Ltd. v. Walt Disney Co. - 145 F.3d 481 (2d Cir. 1998)

Rule:

In order for a Lanham Act plaintiff to receive an award of damages the plaintiff must prove either actual consumer confusion or deception resulting from the violation, or that the defendant's actions were intentionally deceptive thus giving rise to a rebuttable presumption of consumer confusion. Lanham Act, 15 U.S.C.S. § 1501 et seq.

Facts:

In 1939, Walt Disney Company (“defendant licensee”) obtained a license for the right to use a musical composition in a motion picture. In 1991, defendant licensee released a movie in video format which contained the composition. Boosey & Hawkes Music Publishers Ltd., the assignee of the musical composition (“Plaintiff assignee”) brought an action under the Lanham Act, 15 U.S.C.S. § 1125(a), alleging that defendant licensee’s foreign distribution in video cassette and laser disc format of the film featuring the musical composition infringed its rights. Plaintiff assignee also sued for breach of contract. The district court granted partial summary judgment to plaintiff assignee, declaring that defendant licensee’s video format release was not authorized by the license agreement. The court granted partial summary judgment to defendant licensee, dismissing plaintiff assignee’s claims for breach of contract and violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff assignee cross-appealed from the dismissal of its infringement and contract claims.

Issue:

  1. Under the circumstances, did the defendant licensee infringe plaintiff assignee’s rights over the musical composition?
  2. Did the defendant licensee breach the license agreement when it authorized distribution of the film in video format?

Answer:

1) No. 2) No.

Conclusion:

The Court noted that in order for a Lanham Act plaintiff to receive an award of damages, the plaintiff must prove either actual consumer confusion or deception resulting from the violation, or that the defendant's actions were intentionally deceptive thus giving rise to a rebuttable presumption of consumer confusion. In the case at bar, the Court affirmed the trial court's dismissal of plaintiff's Lanham Act claims since plaintiff did not prove actual consumer confusion or deception. Anent the second issue, the Court vacated the trial court's grant of summary judgment for plaintiff declaring that defendants' foreign video format marketing exceeded the terms of the license and dismissing plaintiff's claims for breach of contract. The license for motion picture rights extended to video format distribution. Thus, the grant of summary judgment was improper.

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